Intellectual Property
Handbook
Office of Technology Management
Table of Contents
What Is Intellectual Property? ...... 3
What Is A Patent? ...... 3
What Is A Copyright? ...... 3
What Is A Trademark? ...... 3
What Is Patentable? ...... 4
Who Owns Intellectual Property? ...... 4
Who Is An Inventor? ...... 5
Is Record Keeping Important? ...... 5
Recommendations for Recordkeeping ...... 6
Procedures for Protecting Intellectual Property ...... 7
Disclosure of Inventions/Discoveries ...... 7
Confidentiality and Disclosure ...... 8
Submission, Evaluation and Commercialization of A Technology ...... 8
Patent Prosecution ...... 10
Industry / Federal Funding ...... 10
Royalty / Equity: What Is Royalty? ...... 11
UTHealth Royalty Division ...... 11
OTM Contact Information ...... 12
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What Is Intellectual Property?
Intellectual property is any invention, discovery, trade secret, technology, scientific or technological development, research data, computer software, or other form of expression that is in a tangible form. Intellectual property can be protected by patent, trademark or copyright laws, or it can be protected by not disclosing the "know how" to others, maintaining it as a trade secret. Most of the information in this handbook will deal with inventions and their protection through the process of patenting.
What Is A Patent?
A patent is a property right granted by the United States and/or a foreign country that gives the holder the exclusive right to exclude others from manufacturing, using, selling or offering to sell the invention in that particular jurisdiction for a period of 20 years from the date of filing the patent application. As property, a patent may be sold or assigned, pledged, mortgaged, licensed, willed, or donated, and be the subject of contracts and other agreements. When a patent is issued, the owner/inventor has the opportunity to profit by the manufacture, sale and/or use of the invention in a protected market or by charging others for making, selling or using it. To obtain information on patenting an invention, contact the University of Texas Health Science Center at Houston (UTHealth) Office of Technology Management (OTM).
What Is A Copyright?
A copyright is a grant by the United States of exclusive rights over the writings of an author, and includes software. Copyright protects only the expression, not the idea. If the author of the material wants the right to legally protect their material, claims for copyright must be registered in the U.S. Copyright Office. Copyright and software Copyright protection at UTHealth begins with submission of a technology disclosure form and subsequent review by the OTM. To obtain copyright registration for materials in a tangible form, contact the Office of Technology Management. Further information on copyright may be found at:
http://www.utsystem.edu/OGC/IntellectualProperty/cprtindx.htm.
What Is A Trademark?
A trademark differs from both patents and copyrights. It is a word, name or symbol adopted or used by an individual or corporation to distinguish its goods or services from the goods or services of another. When a mark is registered in the Texas Secretary of State's Office or the U.S. Patent and Trademark Office (USPTO), the trademark owner obtains certain rights and benefits. Rights to a trademark are established by adoption and actual use, not by authorship as in copyrights, or by inventorship as in patents. For information on how to obtain a trademark, contact the Office of Technology Management. Further information on trademarks may be found at:
http://www.utsystem.edu/OGC/IntellectualProperty/trdmrk.htm.
What Is Patentable?
Patents are granted for inventions of new and useful processes, machines, manufactured products, compositions-of-matter, or any new and useful improvement to an existing invention. The scope of patentable inventions is broad and includes various things from “apparel” to “recombinant DNA technology.” Some things that cannot be patented in the U.S., such as: theories, ideas, plan of action, results, and laws of nature or scientific principles.
Patentable inventions must be:
· “NOVEL,” meaning that the invention is unknown, i.e. it has not been previously publicly used, sold, offered for sale or described in printed form.
· “USEFUL,” meaning that the invention has a specific and substantial credible utility and is not just a subject for additional research.
· “NON-OBVIOUS,” meaning that, at the time of invention, the invention would not have been obvious to a person having ordinary skill in the art to which the invention pertains.
An inventor should study his/her invention in relation to other available ways of doing the task or other similar technologies and decide whether the invention contains advantages that are not only novel and non-obvious, but also has some real world utility, which makes it marketable.
Inventors, with the assistance of a patent attorney coordinated through OTM, prepare a patent application containing sufficient enabling written description to allow others to make and use the novel, non-obvious and useful invention, as well as the best mode of practicing the invention at the time the application was filed. If all of these criteria are met to the satisfaction of the Patent and Trademark Office, the patent application will be allowed to issue as a patent.
Who Owns Intellectual Property?
The University of Texas System Policy is defined in The University of Texas System Rules and Regulations of the Board of Regents:
http://www.utsystem.edu/bor/rules.htm#A10.
The UT System Intellectual Property Policy applies to: (a) all persons employed by the UT System or by any of its institutions including, but not limited to, full and part-time faculty and staff and visiting faculty members and researchers; and (b) to anyone using the facilities or resources of the UT System or any of its institutions, including, but not limited to, students enrolled at a UT System institution whether undergraduate or master’s and doctoral degrees, and postdoctoral and pre-doctoral fellows. All individuals subject to this policy must assign their rights in intellectual property included under this policy in accordance with the provisions of Rule90102. Intellectual property either developed within the course and scope of employment of the individual or resulting from activities performed on UT System time, or with support of State funds, or from using facilities or resources owned by the UT System or any of its institutions (other than incidental use) is owned by the Board of Regents of the UT System. Intellectual property resulting from research supported by a grant or contract with a Federal agency, with a profit or nonprofit entity, or by a private gift or grant to The University of Texas belongs to The University of Texas. This provision is necessary since the assignment legally designates the owner of the intellectual property and without properly executed assignment, the title to the property will be in question.
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Who Is An Inventor?
An inventor is a person who, alone or in combination with others, conceives of a complete and operative manner of performing a process or making a machine, manufacture, or composition of matter, or improvement. More simply, an inventor is a person who contributes to the conception or the mental development of the complete procedure by which the invention is achieved, to the degree that it may be reduced to practice by one skilled in the in the inventor’s field of knowledge.
Colleagues, co-authors, students, technicians or machinists, even though they gather all of the essential data or construct a practical embodiment of an invention, may not be inventors unless they make a conceptual inventive contribution to a claimed invention.
If a determination of inventorship cannot be made on the basis of records, legal advice will be sought. A patent attorney can make a legal determination of inventorship after a review of the facts and possibly personal interviews prior to issuing and/or after a patent application has been filed.
Co-inventors share equally in the royalties from commercialization of their invention unless specified otherwise as detailed in the OTM Technology Report form, or a written agreement to the contrary has been executed and provided to OTM.
Is Record Keeping Important?
U.S. patent practice places a premium on witnessed records when two or more parties claim the same invention. The date the idea occurred (“conception”) and the date it was put into functional form (“reduced to practice”) are essential. Equally important is the "diligence" shown by contending inventors. Each must prove that they regularly pursued work on the invention, documenting their efforts on a regular basis.
The importance of keeping detailed and accurate laboratory notebooks cannot be overemphasized. When an idea is conceived, a record should promptly be made in the form of a sketch, drawing or written description, and this record should be signed and dated in ink. More detailed guidelines for record-keeping are as follows:
Recommendations for Recordkeeping
· Record Books:
Documentation of the research surrounding a new discovery or invention should be kept in a permanently bound notebook, with spiral or glue bindings. Pages should be consecutively numbered and each relevant page dated, signed, and witnessed. Avoid removing original pages.
· Signatures and Dates:
All notebooks should be signed and dated so as to indicate the first day the inventor began using the notebook. Each entry should be signed and dated. An independent witness who understands the technology but is not a co-inventor of the invention should sign and date key points on a regular basis.
· Use Permanent Ink:
Notebook entries should be made in permanent ink and in the order collected. Do not erase entries or use white-out. Errors should have a single line drawn through the error and corrections made adjacent to the deletion. All such corrections should be initialed and dated.
· Blank spaces:
Delete spaces between entries by drawing a line through the blank space of the dated page.
· Avoid Modifications and Changes:
Prior entries should not be modified at a later date. If data are omitted, the new data can be entered under a new date and cross-referenced to the previous entry. Record experiments as they are performed.
· Tense:
Descriptions should be made in the past tense (e.g., chemical analysis was conducted…), describing what was actually performed.
· Abbreviations and special terms:
Define all abbreviations.
· Discussions with Co-investigators:
Key discussions, ideas and suggestions with all involved in the invention/discovery should be accurately documented along with their names and dates, to assist in establishing inventorship.
· Detailed Reporting:
Carefully document experimental descriptions, conditions, specific materials; test results, interpretations of the results, photos, printouts, tables, graphs or sketches of the results or devices tested. Experimental objectives, goals, hypotheses and rationale should be included.
· Attachment Documents:
Attachments such as graphs, printouts, etc. should be permanently affixed in the notebook by glue or stapling and both the attachment and the notebook page signed and dated. Where affixing the attachment is not possible it should be placed in an envelope and the envelope stapled to the notebook page. Both the envelope and page should be signed and witnessed, referring to the attachment in the envelope.
· Retain Completed Notebooks:
Completed notebooks should be numbered, dated and kept in a safe location, together with corresponding patent applications or patents for the life of the patent and several years thereafter. The notebooks should remain with UTHealth if the inventor leaves the laboratory or university.
Procedures for Protecting Intellectual Property
Whenever intellectual property is created by an employee of UTHealth, the employee shall disclose his/her intellectual property to UTHealth’s OTM per Rule90102. In confidence, OTM reviews the potential intellectual property in order to determine the Board of Regents’ interest and rights in the creative effort. Scientific merit and commercial applicability are also considered in this review. If OTM elects, OTM will take appropriate action to pursue protection of the Board’s intellectual property. If OTM recommends that the Board of Regents not pursue its interests, the patent/patent applications may be discussed with the inventors who are currently employed by UT Health and subsequently abandoned. If the recommendation to abandon patent prosecution is approved by UTHealth President, the Office of the Executive Vice Chancellor and the UT System Intellectual Property Office, then the intellectual property may be licensed or released to the inventor with certain financial, commercial, and other stipulations.
Disclosure of Inventions/Discoveries: When Should an Invention be Reported to the Office of Technology Management?
Inventors are encouraged to contact OTM early in the inventive/discovery process to plan an effective strategy for facilitating the publishing and research reporting that is a primary mission of the university, while also protecting the intellectual property in an appropriate manner.
The time an invention is placed in the public domain, substantially affects the scope, quality, and strategy of world-wide patent protection. Publication of articles, abstracts, posters and/or oral presentation to industry or another public disclosure such as a scientific meeting may result in loss of foreign and U.S. patent rights. Disclosure of an invention or discovery by publication or presentation to the public or industry before submitting an invention disclosure to UTHealth is contrary to UT System Intellectual Property Policy Rule90102. To minimize the possibility of barring patent applications in the U.S. and foreign countries, inventors are encouraged to consider the following guidelines for publication and/or presentation:
1. Avoid revealing details, in writing or speaking, that might allow a person to reproduce your results;
2. Avoid speculation of future discoveries in presentations and publications;
3. Consult with OTM as you are planning to give a talk/planning a publication (i.e. months before the event/publication when you are preparing drafts/abstracts).
Publication or presentation of your discoveries in detail will cause you to forego patent protection in most foreign countries, although a U.S. patent application may still be filed within a year of such disclosure. A loss of patent protection for foreign countries may severely limit, or potentially eliminate, the opportunity for licensing in, and deriving royalties from, those countries.
Ideally, a patent application (if the subject matter is patentable) should be filed prior to any publication or public presentation.